Federal Circuit disposition — 25-1133

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: OLIVER WENDEL GAMBLE,
Appellant
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2025-1133
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/718,124.
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Decided: May 8, 2025
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O LIVER WENDEL G AMBLE , New York, NY, pro se.
MAI-T RANG D UC D ANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Coke Morgan Stewart. Also represented by
MICHAEL S. F ORMAN, AMY J. N ELSON.
______________________
Before T ARANTO and STOLL , Circuit Judges, and SCARSI,
District Judge.1
P ER CURIAM .
1 The Honorable Mark C. Scarsi, District Judge,
United States District Court for the Central District of Cal-
ifornia, sitting by designation.
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IN RE: GAMBLE 2
In 2019, Oliver Wendel Gamble filed an application for
a patent with the U.S. Patent and Trademark Office (PTO).
The application, U.S. Patent Application No. 16/718,124,
describes and claims a method and system to annotate
emails or text messages on a mobile device. The assigned
patent examiner at the PTO rejected all the pending claims
of the ’124 application for obviousness and some for indefi-
niteness. The PTO’s Patent Trial and Appeal Board
(Board) affirmed the obviousness rejections of all but three
claims, which the Board held indefinite (along with many
other claims), so that all claims were rejected. Ex parte
Gamble, Appeal No. 2023-003588, 2024 WL 4052837, at
*14 (P.T.A.B. Aug. 30, 2024) (Board Decision). Mr. Gamble
now appeals to us. We affirm.
I
The ’124 application, filed on December 17, 2019, titled
“Method and System for Notation of Messages Stored on a
Mobile Device,” describes and claims “[a] messaging sys-
tem with methods for adding descriptive notes to Emails
and Text Messages store[d] on a mobile device.” Govern-
ment Supplemental Appendix (S. Appx.) 62–63. By allow-
ing users to add annotations to their mobile
communications, the claimed invention helps users re-
member important information associated with particular
communications. S. Appx. 65. In one embodiment, sent
and received messages are stored as records in a table in a
database, which can be searched by, e.g., the type of com-
munication or date of creation. S. Appx. 44 fig.1, 65–66. In
the embodiment, each record contains “annotation” fields,
in which the user can add or edit notes, S. Appx. 65, and
when viewing a message, the user can also view the asso-
ciated annotations, S. Appx. 66. The application contained
18 claims. Claim 1 recites:
1. A method for enriching the value of a message
stored on a mobile device comprising: software on
a mobile device storing individual sent and
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IN RE: GAMBLE 3
received text messages or received email in fields
of a record in a table of a database; storing the com-
ponents of each message into one of multiple fields
of said individual record[], and the said record’s
fields being accessible on the mobile device for
searching, editing, and displaying; each stored
message and the contents of a designated user ed-
itable field of the said record can be viewed by a
user of the mobile device.
S. Appx. 35.
During patent examination, the examiner relied on two
prior-art references: U.S. Patent Application Publications
2002/0098831 A1 (Castell), S. Appx. 487–507; and
2004/0137955 A1 (Engstrom), S. Appx. 508–19. Castell, ti-
tled “Unified Message System and Method,” describes a
unified message service that “coordinates the activities and
notifications to the mobile device” and “unifies all messag-
ing and data services” so that the user sees all messages on
the mobile device “in a consistent and harmonious fashion.”
S. Appx. 487, 499 ¶¶ 20–21. Castell’s system includes a
“complete database and storage area” containing “mes-
sages and events that have been sent to the mobile device.”
S. Appx. 498–99 ¶ 19. One embodiment contains a mobile
device with an operating system, device applications, dif-
ferent types of mobile device storage (e.g., random access
memory or flash memory), and a personal information
manager application that may store data items on the de-
vice. S. Appx. 502–03 ¶¶ 45, 47–48. When a user receives
a message, Castell’s system sends the user’s mobile device
a notification, which may contain a summary of the mes-
sage, and the user can then interact with the message, for
example, by playing it or deleting it. S. Appx. 500–01
¶¶ 26–36.
Engstrom, titled “Unified Message Box for Wireless
Mobile Communication Devices,” teaches a “unified mes-
sage box,” which can display messages of multiple formats
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IN RE: GAMBLE 4
(e.g., “voice mail notifications, text messages, and/or
emails”) in one location for a user to interact with via a user
interface. S. Appx. 508, 515 ¶ 25. In an exemplary embod-
iment, the user interface comprises a table with fields such
as sender, message type, subject, date, and time. S. Appx.
511 fig.3, 515–16 ¶¶ 27–30. But Engstrom explains that
its system “may not include all of the illustrated fields, may
arrange the fields differently, may include additional
fields, may provide for different types of interaction with
messages, [and] may provide for interaction with messages
in different ways.” S. Appx. 516 ¶ 33; see also S. Appx.
517–18 ¶ 56 (“Alternative embodiments may support a
broad range of other user manipulation of the message ob-
jects in the unified message box.”).
On September 14, 2022, the examiner issued a non-fi-
nal office action, rejecting claims 1, 3–6, 11, and 14–17 for
indefiniteness under 35 U.S.C. § 112(b) (specifically for in-
sufficient antecedent bases) and claims 1–18 for obvious-
ness under 35 U.S.C. § 103.
Mr. Gamble, pursuant to 35 U.S.C. § 134(a), appealed
the rejections to the Board. In his appeal, Mr. Gamble
characterized the rejections under 35 U.S.C. § 112(b) as
“minor defects” and “grammatical imperfections” that he
believed he could “set aside until at least one claim has
been found allowable.” S. Appx. 350–51 (citing Manual of
Patent Examining Procedure § 707(b); and relying on 37
C.F.R. § 1.104(b) (holding that “matters of form need not be
raised by the examiner until a claim is found allowable”)).
On August 30, 2024, the Board issued its final written
decision, concluding that all claims were unpatentable.
Board Decision, at *14. The Board “summarily sus-
tain[ed]” the examiner’s rejection of claims 1, 3–6, 11, and
14–17 for indefiniteness because Mr. Gamble, in not rebut-
ting this ground for rejection, forfeited any challenge to it.
Id. at *2–3 (citations omitted). The Board entered a new
ground of rejection for claims 2, 3, and 18 for
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IN RE: GAMBLE 5
indefiniteness, as those claims depend on claims 1 and 14
(already determined to be indefinite) and therefore “in-
herit[ed] the same deficiency.” Id. at *1, *3 (citing 37
C.F.R. § 41.50(b)). The Board notified Mr. Gamble that its
new ground of rejection was not to be considered “final for
judicial review” and that “to avoid termination of the ap-
peal as to the [newly] rejected claims,” Mr. Gamble would
have to “exercise one of the following two options with re-
spect to the new ground of rejection”: reopening prosecu-
tion or requesting a rehearing. Id. at *14–15 (citing 37
C.F.R. § 41.50(b)). With regard to obviousness, the Board
affirmed the examiner’s rejection of claims 1, 2, and 6–18
and reversed the obviousness rejections of claims 3–5
(which were separately unpatentable for indefiniteness).
Id. at *14.
Mr. Gamble timely appealed to us. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(4)(A).
II
We review the Board’s legal conclusions without defer-
ence and its factual findings for support by substantial ev-
idence, which “means such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir.
2002) (quoting Consolidated Edison Co. v. National Labor
Relations Board, 305. U.S. 197, 229 (1938)). Indefiniteness
and obviousness are both questions of law based on under-
lying factual findings. Cox Communications, Inc. v. Sprint
Communication Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016)
(indefiniteness); In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000) (obviousness). The applicant, Mr. Gamble, has
the burden of showing that the Board committed reversible
error. In re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004).
A
In his opening brief before us, Mr. Gamble challenges
the indefiniteness rejections but provides no reasoning or
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IN RE: GAMBLE 6
argument supporting the challenge. See Gamble Informal
Br. at 2 (Question No. 4). In his reply brief, Mr. Gamble,
again making no argument for definiteness on the merits,
argues that the Board erred in holding that he forfeited a
challenge to the examiner’s indefiniteness rejections by not
presenting any such challenges in his appeal to the Board.
See Gamble Reply Br. at 7–14 (citing Manual of Patent Ex-
amining Procedure § 707(b)); see also S. Appx. 350–51.
The absence of any meaningful argument at all in the
opening brief is a forfeiture of the indefiniteness challenge,
as an appellant cannot wait until the reply brief to present
a meaningful argument. See In re Killian, 45 F.4th 1373,
1385–86 (Fed. Cir. 2022) (“conclusory, skeletal argument”
insufficient to preserve a point); McIntosh v. Department of
Defense, 53 F.4th 630, 641 (Fed. Cir. 2022); SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319–20
(Fed. Cir. 2006). In any event, we see no error in the
Board’s rulings on indefiniteness.
Regarding claims 1, 3–6, 11, 14, and 17, which the ex-
aminer held indefinite, the Board did not need to say more
than it did. “When the appellant fails to contest a ground
of rejection to the Board,” the Board has “no burden . . . to
consider the merits of that ground of rejection” and “may
treat any argument with respect to that ground of rejection
as waived.” Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008); see also In re Google Technology Holdings LLC, 980
F.3d 858, 863 (Fed. Cir. 2020) (holding that failing to pre-
sent arguments before the Board “compels a finding of for-
feiture”). That principle applies here, as Mr. Gamble did
not challenge the indefiniteness rejections of those claims
before the Board. S. Appx. 350–51; Gamble Reply Br. at 7,
11–12; see also Board Decision, at *2–3.
Regarding claims 2, 13, and 18, which the Board held
indefinite because they depend on claims 1 and 14 (already
held indefinite), we also see no reversible error. The
Board’s logic, based on the relationship of a dependent
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IN RE: GAMBLE 7
claim to the independent claim on which it depends, is
sound. When the Board announced these rejections, it ex-
pressly told Mr. Gamble what he needed to do in order to
challenge this new ground of rejection. But Mr. Gamble
does not identify any record evidence or even assert that he
followed any procedures necessary to preserve an appeal of
those rejections.
Mr. Gamble provides nothing to undermine the forego-
ing reasons for affirmance of the Board’s indefiniteness re-
jections. Although he points to In re Cahill, No. 2024-1745,
2025 WL 80073, at *1–2 (Fed. Cir. Jan. 13, 2025) (nonprec-
edential), see Gamble Reply Br. at 7, that decision—which
held an indefiniteness challenge to be forfeited—does not
say or imply anything to the contrary. And although Mr.
Gamble cites authority confirming that indefiniteness is
not a basis for holding claims unpatentable in an inter
partes review, see Gamble Reply Br. at 7 (citing McDermott
Will & Emery, PTAB May Not Cancel Indefinite Claims in
IPR, No Matter What, N AT ’L L. REV . (Feb. 13, 2020)); see
also Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261,
274–75 (2016), that limitation, based on 35 U.S.C. § 311(b),
is inapplicable to, and has no counterpart applicable to, an
examiner’s review of a patent application or the Board’s re-
view of the examiner’s decision, 35 U.S.C. §§ 131, 134. In
the application context, compliance with section 112(b) is
plainly one of the requirements for issuance, which de-
pends on a determination that “the applicant is entitled to
a patent under the law.” 35 U.S.C. § 131.
B
Mr. Gamble appears to assert that the Board’s obvious-
ness determinations for claims 1, 2, and 6–18 are not sup-
ported by substantial evidence. Gamble Informal Br. at 1–
2 (Question Nos. 2–3). Because Mr. Gamble’s opening brief
makes only conclusory statements without providing devel-
oped argument, these arguments are also forfeited. McIn-
tosh, 53 F.4th at 641; SmithKline, 439 F.3d at 1319. And
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IN RE: GAMBLE 8
in any event, even if we consider the arguments Mr. Gam-
ble provides in his reply brief, we see no basis for setting
aside the Board’s decision regarding obviousness.
Mr. Gamble first argues that a relevant artisan would
not have been motivated to combine Castell and Engstrom
in a way that arrives at the claimed invention, as these two
references teach different types of storage and display
methods. Gamble Reply Br. at 5–6. According to Mr. Gam-
ble, a relevant artisan would have “no incentive” to com-
bine Engstrom, which teaches retaining a message’s
“native display and transmission,” and Castell, which
teaches storing and displaying messages on a mobile de-
vice. Id. at 6; see id. at 4–6. The Board, however, adopted
the examiner’s finding that a relevant artisan would have
been motivated to combine Engstrom’s teaching of a uni-
fied message box installed on a mobile device with Castell’s
system “to allow a user to access a variety of communica-
tion sessions without needing to navigate through myriad
menus and sub-menus.” Board Decision, at *5 (citing
S. Appx. 227 (examiner’s reasoning)); see id. at *7 (agreeing
with examiner’s obviousness rejection). This factual deter-
mination is supported by substantial evidence. Engstrom
itself identifies “navigat[ing] in and out, and back and forth
among many menus and sub-menus” as one problem that
its claimed unified message box addresses. S. Appx. 514
¶ 6; see also S. Appx. 227 (examiner’s reasoning based on
Engstrom).
Mr. Gamble also argues that neither Castell nor Eng-
strom nor their combination teaches “annotating messages
stored on [a user’s] mobile device.” Gamble Reply Br. at 1;
see id. at 6. The specific capability that he claims is not
taught by the prior art—and therefore, he argues, pre-
cludes a teaching of annotation—is the “editing” of mes-
sage fields. See id. at 1, 5. The examiner found, and the
Board agreed, that Castell teaches editing a record. Board
Decision, at *5 (citing S. Appx. 383–85 (examiner’s reason-
ing)); see id. at *7 (agreeing with examiner’s obviousness
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IN RE: GAMBLE 9
rejection). This factual determination has substantial-evi-
dence support as well. In particular, Castell teaches “de-
leting an item in the unified event listing or sorting the
listing,” which supports the Board’s finding that Castell
teaches editing the fields of a record. Id. at *5 (citing
S. Appx. 491 figs.4a & 4b). The Board also credited the ex-
aminer’s finding that because “the ability to edit a contact
list or calendar entry” is an “intrinsic feature” of a mobile
device, it would have been obvious to a relevant artisan to
have editable fields on a mobile device. Id. (citing S. Appx.
384).
III
We have considered Mr. Gamble’s other arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s decision.
The parties shall bear their own costs.
AFFIRMED
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